Case No. D2012-1754

1. The Parties

The Respondents are Moniker Privacy Services of Pompano Beach, Florida, United States of America (“US”) and DN support, urlpro, of Xingtan, Shunde, China.

2. The Domain Name and Registrar

The disputed domain name <vivantes.com> is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2012. On August 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 12, 2012.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2012.

The Center appointed Theda König Horowicz as the sole panelist in this matter on October 17, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a company established in Berlin, Germany, which is part of a large state-owned hospital group operating mainly in Germany but which also offers medical services on an international level.

The name of the Complainant was chosen and launched in May 2001. The Complainant has an Internet presence under the domain names <vivantes.de> and <vivantes-international.com>. The Complainant owns the following trademark registrations for “Vivantes”:

- German trademark VIVANTES No. DE30132504 applied for on May 23, 2001 and registered on March 12, 2002.

No information is available on the Respondent DN support, urlpro. Moniker Privacy Services is known for offering the possibility to third parties to register domain names anonymously, that is without having their identity and details revealed to the public.

The disputed domain name was registered on September 13, 2001. The domain name is linked to a parking website which automatically generates sponsored links to third parties’ websites, most of them being websites offering healthcare services.

The disputed domain name is mentioned on “sedo.com” as being offered for sale by its owner. Following an offer of USD 1,000 made by the Complainant on the “www.sedo.com” website, the latter received a counter offer requesting USD 35,000.

5. Parties’ Contentions

A. Complainant

The Complainant invokes that the disputed domain name is identical to its trademark VIVANTES. The Complainant also argues that the Respondent does not have any rights or legitimate interests over the disputed domain name. Finally, the Complainant states that the disputed domain name was registered and used in bad faith, as the Respondent must have known the Complainant’s rights over “vivantes” at the time of the registration. The disputed domain name is also used in bad faith as it is only linked to a webpage offering sponsored links to websites of third parties active in the Complainant’s field and as it was apparently mainly registered for the purpose of selling.

B. Respondent

The Respondent did not file a response.

6. Discussion and Findings

Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:

(i) that the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is undisputed that the Complainant has rights over the trademark VIVANTES which is registered in Germany and in several other countries through an international registration.

The disputed domain name contains the Complainant’s trademark VIVANTES in its entirety and is identical to such mark. It is well established that the generic top-level domain name (“gTLD”), in the present case “.com”, is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO No. D2001-0374).

The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant has established that the Respondent has not been known by the name “Vivantes”, has not been genuinely using the said name since the registration of the disputed domain name and has not shown any interest in obtaining rights in a VIVANTES trademark.

The burden of production on this factor therefore shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights or legitimate interests in the disputed domain name (See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).

The Respondent having remained silent in these proceedings, the Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel notes that the Complainant filed the German trademark VIVANTES on May 23, 2001. It was registered on March 12, 2002 that is approximately six months after the registration of the disputed domain name on September 13, 2001.

The question therefore arises as to whether the said domain name was registered in bad faith by the Respondent.

Generally, UDRP panels consider that when a domain name is registered by the respondent before the complainant's trademark right is shown to have been first established, the registration of the domain name is not in bad faith because the registrant cannot have contemplated the complainant's then non-existent right. However, in certain situations, bad faith can be found, when the respondent is clearly aware of the complainant, in particular when the registration of the domain name occurs shortly before or after the potential trademark in question is the subject of substantial media attention in relation with a widely anticipated service launch of which the respondent is aware (see Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc., WIPO Case No. D2003-0320; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,
WIPO Case No. 2003-0958).

The Complainant has shown that it adopted the name “Vivantes” beginning of 2001 to designate a group of hospitals and provide medical services both in Germany and internationally. According to the evidence filed with the complaint, Vivantes is a well-established group of hospitals which enjoys a certain notoriety. More specifically, the Complainant has shown that the adoption of its new name “Vivantes” was made public and presented to the media in May 2001.

The disputed domain name was registered only a few months later, shortly after the media presentation, which tends to indicate that it was actually registered in bad faith., particularly since the name “Vivantes” is distinctive and has no specific meaning in the German or English language. The Complainant has also shown that said name is not registered or used as a trademark by other parties and this is confirmed by a quick search made by the Panel on the Internet.

The impression that the Respondent must have known the Complainant’s potential trademark rights is reinforced by the fact that the webpage connected to the disputed domain name provides lists of websites owned by third parties which are active in the exact same field as the Complainant, that is in the field of medical services. This fact cannot be coincidental.

As a matter of fact, the above-mentioned elements show, on balance, that the Respondent was aware of the Complainant and its potential rights when it registered the disputed domain name.

Furthermore, the Panel notes that the identity of the DN support, urlpro is not clearly established. Indeed, DN support, urlpro does not seem to be a registered company and no information was given on the individual(s) behind this entity. Some of the email notifications made by the Center to the several email addresses of the Respondent were unsuccessful. Only one seems to have gone through. . The few available information on the Respondent is that it is apparently based in China (the written notice of these proceedings has been successfully delivered to the Respondent at the given address in this country) and that it was trying to sell the disputed domain name for the substantial amount of USD 35,000. The Respondent having chosen to remain anonymous, notably by using the privacy services of Moniker Online Services, Inc., and the fact that it offered the disputed domain name to the Complainant in excess of the Respondent’s out-of-pocket costs of registration is, in this Panel’s opinion, a further indication of registration in bad faith.

Finally, the use made by the Respondent of the disputed domain name is a classic example of use in bad faith.

For the above-mentioned reasons and in the absence of any defense by the Respondent, the Panel thus concludes that the third condition instituted by paragraph 4(a)(iii) is fulfilled as well.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <vivantes.com> be transferred to the Complainant.